Submissions on the appeal
15 The written submissions provided to the Court by counsel for the appellants (Friday's Australia and Big Country) focus on the nature, appearance and manner of operation of the Raby Tavern and Grey Gums Hotel/Motel. Counsel describe each of these establishments as "a pub on the outskirts of Sydney" offering food of a standard one would expect in such a place. Since 1985 one of the bars of the Raby Tavern has had TGI Friday painted above its door and a neon sign in its window bearing the same words. Over the years, the hotel has used these words in local newspaper advertisements of its Friday night entertainment. A further sign was erected in 1996.
16 Counsel say the situation is similar, although more recent, at Penrith. In relation to Artarmon, counsel point out there was only ever a sign at this site. There is no evidence the sign caused confusion; and the same statement may be made about Raby and Penrith.
17 Counsel for the appellants submit their opponents' case at trial faced the following hurdles:
"(a) their name was not inherently distinctive. There was evidence of many uses of the expression 'Thank God Its Friday' and its abbreviations which were associated with relaxation. There was evidence of many uses of the expression 'Thank God Its Friday' and its abbreviations and 'Friday's' in other businesses;
(b) they traded in such a way that any reputation that may have been acquired was confined to a combination of 'TGI Friday's' with a particular get up which included specific script, restaurant style and dominant use of the word 'Friday's';
(c) the Appellant only used the name 'TGI Friday's' and not only did not use any part of the Respondents' get up but used many distinguishing features;
(d) they could not prove a sufficient reputation in NSW;
(e) the reliance on the intentions of Mr Hesky did not logically advance their cause."
18 In developing the first point, counsel point out that TGI Friday's, Friday's and TGI Friday are ordinary English expressions, not original to the respondents or initially associated with them. The phrase is widely used to connote relaxation with a drink and is used in many Australian bars and restaurants.
19 Counsel say that any reputation in the words acquired by the respondents is a reputation associated with a particular get up, which is not copied by the appellants. In this respect they refer to evidence given by Stuart Wing, who was General Manager of Developments until shortly before the trial. Mr Wing said all Friday's Inc restaurants employed "the same distinctive design, layout and menus". He was asked about this:
"What are you referring to as the distinctive design, layout and menus?---Well, the distinctive layout predominantly refers to the feature of the central bar which is a feature in virtually every TGI Friday's around the world. Within that there is the use of layering within the restaurant that defines particular dining segments, so that would be the layout. The décor we have discussed.
Within décor you include what?---Oh, brass.
Rails?---Brass rails, glass, tiffany lights, panelling, polished floor boards, red bricks on the floor. Particular pieces of lighting within the restaurant. It is a visual package that is unique to TGI Friday's.
Plus the 1940s memorabilia?---Yes, of course, including the memorabilia.
And the black and white portraits?---I think in the Jam Factory restaurant there are probably something like 200 individual framed pieces, some of which are black and white, some of which aren't. I do not think the black and white in itself is the most important.
The red and white stripes referred to in your first paragraph 3, does that appear both on tablecloths, firstly?---In some restaurants, yes. Not on all tables.
And in awnings?---Yes.
And on the shirts of waiting staff?---Yes.
And is this right; that the design of the restaurants is maintained to such a degree of similarity that a staff member can go from any TGI restaurant around the world to another one and feel at home?---Well, not only staff, patrons.
But in terms of staff, so that, for example, particular drinks have the same key numbers on the cash register?---No, that's not correct. They have the same recipes.
And functional layout of equipment?---No. There is some commonality between restaurants but as restaurants in different markets develop the individual operators are allowed to make whatever is necessary, the changes that are necessary.
Provided they maintain the fundamentals?---Provided they maintain the fundamentals of exceeding the guest experience in delivering the food, the product, the décor and the atmosphere, which are the cornerstones of the Friday's brand, TGI Friday's brand."
20 In replying to these submissions, counsel for the respondents emphasise the trial judge's findings about reputation and Mr Hesky's conduct. They say the relevant conduct of the appellants commenced after publication of the newspaper article in June 1994; the earlier use of the words TGI Friday's at the Raby Tavern was inconsequential. As at June 1994, counsel say, Friday's Inc had a worldwide reputation. Although it had not yet opened an Australian restaurant, 19 Australian witnesses deposed to having patronised its restaurants overseas.
21 Counsel for the respondents argue that April 1996 was a significant date; it was about that time that Mr Hesky caused to be installed at the Penrith Hotel (then under reconstruction) what they call "his newly styled red, white and black 'TGI Friday's' signage". He subsequently erected this same signage at the Raby Tavern and on the Artarmon land. Counsel say these events "changed dramatically" the use of the name by Friday's Australia .
22 Counsel point to the evidence about establishment of the Melbourne restaurants, contending this shows that, by April 1996, Friday's Inc had a local reputation as well as one deriving from its international activities.
Conclusions
23 This case demonstrates the truth of the old adage about one picture being worth a thousand words. With respect to the trial judge, the respondents' cases under ss52 and 53(c) of the Trade Practices Act and the law of passing off cannot survive consideration of the photographic evidence. [We put the matter in that way in order to make clear that we make no comment about the trade marks claim of Friday's Inc, which turns on different considerations.]
24 It is of the essence of the respondents' claims under s52 and s53(c) of the Trade Practices Act that the appellants' conduct is misleading in that it suggests that Friday's Inc is associated with the services provided at Raby Tavern and the Grey Gums Hotel/Motel and foreshadowed at Artarmon. The respondents' passing off case depends upon the existence of a similar misrepresentation, by virtue of which the appellants misappropriate the respondents' goodwill or otherwise damage their business. As Lord Diplock said in Star Industrial Co Ltd v Yap Kwee Kor [1976] FSR 256 at 269 (in a passage approved by the House of Lords in Erven Warnink Besloten Vennootschap v J Townend & Sons (Hull) Ltd [1979] AC 731 at 752):
"A passing off action is a remedy for the invasion of a right of property not in the mark, name or get up improperly used, but in the business or goodwill likely to be injured by the misrepresentation made by passing off one person's goods as the goods of another".
In the present case, we are not concerned with passing off goods; the case is about restaurant services.
25 In Reckitt & Colman Products Ltd v Borden Inc (1990) 17 IPR 1, Lord Oliver expressed a similar idea when he listed the three elements that have to be demonstrated in a passing off action:
"(1) that the trader's get-up, including any brand name, is recognised by the public as distinctive specifically of the plaintiff's goods;
(2) that there has been a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that the goods offered by the defendant are the plaintiff's goods (whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods is immaterial, provided they are identified with a particular source, eg by means of a brand name which is in fact the plaintiff's);
(3) that the plaintiff suffers or, in a quia timet action is likely to suffer, damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the course of the defendant's goods is the same as the source of those offered by the plaintiff."
This passage was adopted by the Full Court of this Court in a case mentioned by the trial judge, Vieright Pty Ltd v Myer Stores Ltd at 31 IPR 369.
26 It is important also to remember the pithy observation of Deane and Fitzgerald JJ in Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 at 196: "A party seeking relief in a passing off action must establish some actual or probable damage."
27 The respondents to the present appeal do not claim the name TGI Friday's was invented by them or is inherently descriptive of their business. Nor is the use of the name peculiar to them. The evidence establishes that the full name, or some recognisable corruption of it, is used by a wide range of Australian businesses offering relaxation and refreshment. The respondents' case, whether under the Trade Practices Act or the law of passing off, depends on the argument that, by April 1996, they had acquired a reputation in the use of that name in connection with restaurants, they having operated restaurants under that name in many countries, including in Australia from October 1995. However, as Mr Wing made clear, this use was always associated with a particular "distinctive layout" and type of décor. The photographs bear out this claim. They showFriday's Inc restaurants in many countries. Although there are some differences in get up, there is a consistency of style. For example, the name TGI Friday's is invariably shown in block capitals, with the letters TGI being smaller than those used in the word Friday's. With only a couple of exceptions, the outside of the building is adorned with a red and white diagonal striped awning. The combination of these elements makes the outside of the restaurants, wherever situated, instantly recognisable to anyone who has ever patronised one of them, as no doubt the respondents intended. And when one gets inside, there are the peculiarities of décor mentioned by Mr Wing. In his words, the elements of the décor combine to present "a visual package that is unique to TGI Friday's".
28 The contrast with the appellants' use of the name could hardly be more stark. At neither Raby nor Penrith is the name used to denote the establishment itself, but merely a bar in a hotel; in both cases a very ordinary bar in a very ordinary suburban hotel, albeit one in which light meals are available. Secondly, in every case the appellants put Friday's or Friday in cursive script. The lettering is quite unlike that used by Friday's Inc. The appellants have no equivalent of Friday's Inc's red and white awning. Their internal décor bears no resemblance to that described by Mr Wing. These differences would be so obvious to any intending patron of the appellants' hotels who knew of Friday's Inc's restaurants that he or she would immediately assume the hotel's use of the name to be coincidental; the differences proclaim disassociation.
29 In a passage from his reasons quoted in para 14 above, the trial judge referred to the appellants' signs being "in the colours of the applicant's logo". With respect, this is not correct. Friday's Inc appears not to have a logo, strictly so called, but merely a practice of showing its name in block letters. However, the photographs show that, unusually perhaps for a chain of restaurants, Friday's Inc does not adopt a standard colour for its name. Even on the same premises, one name sign may be in one colour and another in a different colour. It is true that red (the colour mostly frequently used by the appellants) is sometimes used, but the red generally comes with yellow dot points that yield a very different hue. The photographs of other Friday's Inc restaurants show a common (perhaps predominant) use of other colours, notably yellow.
30 The trial judge was critical of Mr Hesky's conduct. We share this reaction. Mr Hesky seems to have behaved opportunistically. But, as his Honour realised, the case is not to be determined by reference to Mr Hesky's behaviour. Lockhart J pointed out in Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 345, that "… deliberate copying of the plaintiff's goods does not always evidence an intention to deceive; it may indicate nothing more than realisation that the plaintiff has a useful idea which the defendant can turn to his own advantage, though not intending to pass off his goods as those of the plaintiff". In the present case, the trial judge's findings seem to establish that Mr Hesky saw the possibility of extracting a "greenmail" payment from Friday's Inc and acted accordingly. This is not laudable behaviour, but it is a different thing to intending to pass off his company's services as those of Friday's Inc.
31 The critical question is whether there is a probability that the use of the name TGI Friday's by either of the appellants misleads, or will mislead, members of the public into believing that any of the hotels are, or will be, associated with the restaurants operated by Friday's Inc. This question falls to be resolved by undisputed evidence, primarily the photographic evidence. That being so, we are in no worse position than the trial judge, in reaching a conclusion about it.
32 For the reasons indicated, we respectfully disagree with his Honour's conclusion that the public is likely to believe the appellants' services to be those of Friday's Inc. It follows that we find the respondents' claims under s52 and s53(c) of the Trade Practices Act and the law of passing off not established. The appeal should be allowed with costs and the orders of the trial judge set aside. In lieu of those orders, it should be ordered that proceeding NG678 of 1996 be dismissed. Having regard to the fact that the trial of this proceeding was intertwined with that of the other proceedings, we reserve to his Honour the appropriate order in respect of the costs of the trial.
I certify that the preceding thirty-one (32) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justices Wilcox, Kiefel and Emmett JJ.